DATE OF JUDGMENT:
19th January 2022
JUDGES:
Justice B.R. Gavai
Justice B.V. Nagarathna
Justice L. Nageswara Rao
PARTIES:
Appellants (s): Renaissance Hotel Holdings Inc.
Respondent (s): B. Vijaya Sai and Others
SUBJECT
In the present case, an appeal was filed in the Supreme Court of India against the order of the High Court of Karnataka where the High Court found that the respondents/defendants have not violated the trademark “RENAISSANCE” of the appellant/plaintiff under Trade Marks Act, 1999.
OVERVIEW
1. In the present case, the appellant/plaintiff was a company registered under the laws of Delaware, USA and they were the holder and proprietor of the trademark “RENAISSANCE” in relation to the Hotel Industry. The appellant/plaintiff contended they have been using the said trademark since 1981 at their registered location and since 1990 in India where they run a hotel and a convention centre in both Mumbai and Goa.
2. The plaintiff/appellant contended that their trademark “RENAISSANCE” was registered in India under Registration No. 610567 in Class 16 for “printed matter, periodicals, books, stationery, manuals, magazines, instructional and teaching materials and office requisites” and Registration No. 1241271 in Class 42 for “hotel, restaurant, catering, bar and cocktail lounge services, provisions of facilities for meetings, conferences, and exhibitions, reservation services for hotel accommodations”, respectively.
3. The plaintiff/appellant contended that the respondents/defendants were operating a hotel in Bangalore city and another one in Puttaparthi under the impugned name “SAI RENAISSANCE”, which wholly incorporated the appellant/plaintiff's well-known trademark of “RENAISSANCE”.
4. The plaintiff/appellant further contended that respondents/defendants were copying appellant/plaintiff's trademark “RENAISSANCE”, its stylized representation, signage, business cards, and leaflets and this was done in such a manner so as to suggest an affiliation, association, nexus, or connection with the business of the appellant/plaintiff, hence the respondents/defendants violated the trademark of the plaintiff/appellant.
5. However, the respondents/defendants contended that they were not even aware that the appellant/plaintiff had established any such business by using the word “RENAISSANCE” in its name till they received the summons in the present suit. The respondents/defendants further contended that the word “RENAISSANCE” was generic in nature, hence, no such exclusive rights can be claimed by the appellant/plaintiff over the word in India as it is neither a well-known trademark, nor it has any reputation built up by the appellant plaintiff.
6. The respondents/defendants contended that they were ardent devotees of Sri Shirdi Sai Baba and Sri Puttaparthi Sai Baba and it's the belief of all the devotees of Sri Sai Baba that Sri Puttaparthi Sai Baba is the reincarnation of Sri Shirdi Sai Baba and therefore, the respondent/defendant used the dictionary word “RENAISSANCE” after the name of Sri Shirdi Sai Baba and therefore, adopted the name “SAI RENAISSANCE” for their business. Moreover, respondent/defendant has been running the hotel business for the last 15 years and the hotel at Kadugodi, Bangalore was established in the year 2001 near the Ashram of Sri Sai Baba and it was established so as to provide facilities to the devotees of Sri Sai Baba.
7. The trial court partly decreed the suit in favour of the appellant/plaintiff by restraining the respondents/defendants from using the trademark “SAI RENAISSANCE”. The trial court also restrained the respondents/defendants from opening, operating, managing, franchising, licensing, dealing directly or indirectly in hotels, restaurants, or hospitality services of any manner under the trademark “RENAISSANCE” including use of the domain name “www.sairenaissance.com”. Aggrieved by the order of the Trial Court, the respondents/defendants approached the High Court of Kerala.
8. The High Court observed that the evidence produced by the appellant/plaintiff wasn’t satisfactory to uphold the plea as the appellant/plaintiff was a 5 Star hotel but the respondent/defendants' hotel was not of that standard. Moreover, the Court pointed towards lack of evidence to show that the respondents/defendants were taking unfair advantage of the trademark or that the use of the word “SAI RENAISSANCE” was detrimental to the distinctive character or reputation of the appellant plaintiff's trademark.
9. Learned Counsel appearing for the appellant/plaintiff argued that:
a) The High Court erred in its judgment only referring to the condition stipulated in clause (c) of Section 29(4) of the Trade Marks Act, 1999 (hereinafter called ‘the act’) to test the violation of the trademark as the same should not have been as the three conditions mentioned in the said section weren’t satisfied. Instead, the matter should have been decided under section 29(5) of the said act.
b) The High Court, even after establishing that the appellant/plaintiff was a prior user and registered proprietor in respect of the mark “RENAISSANCE” and further establishing that the respondents/defendants had adopted and had been using the registered trademark of the appellant/plaintiff “RENAISSANCE'' along with the prefix “SAI” and that both of them are in the hotels and hospitality business, has totally erred in holding that there was no infringement of the appellant/plaintiff's trademark. Reliance was placed on the judgment in the case of Laxmikant V. Patel v. Chetanbhai Shah and Another.
c) The High Court also erred in applying the test of “deception or confusion” as, in an action for infringement of trademark, where the respondents/defendants' trademark was identical with the appellant/plaintiff's trademark, such a test would not have been applicable.
d) Where the similarity between the plaintiff’s and the defendant’s mark is close either visually, phonetically, or otherwise, and once it has been established by the Court that there has been an imitation, no further evidence will be required to establish that the plaintiff’s rights have been violated, argued by the counsel for the appellant/plaintiff. The Counsel referred to the judgment in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories to buttress the argument.
10. Learned Counsel appearing for the respondents/defendants argued that:
a) “RENAISSANCE” means “rebirth” and that the name “SAI RENAISSANCE” was adopted for their hotel was to signify the birth of Sri Puttaparthi Sai Baba as a reincarnation of Sri Shirdi Sai Baba and that the use of the mark “SAI RENAISSANCE” amounts to honest concurrent use under Section 12 of the said Act. Moreover, the appellant/plaintiff acquiesced to the respondent’s/defendants' use of the word as the suit was filed after a very long time gap.
b) Furthermore, the High Court rightly held that the class of customers to which the appellant/plaintiff and the respondents/defendants were catering was totally different, and as such, had rightly allowed the appeal and dismissed the suit. Reliance was placed on the judgment in the case of Khoday Distilleries Limited (Now known as Khoday India Limited) v. Scotch Whisky Association and Other, Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited, Corn Products Refining Co. v. Shangrila Food Products Limited, and Neon Laboratories Limited v. Medical Technologies Limited and Others.
LEGAL PROVISIONS
Trade Marks Act, 1999:
- Section 29- Infringement of registered trade marks.
- Section 30- Limits on effect of registered trade mark.
ISSUES
1. Whether the respondents/defendants have violated the trademark “RENAISSANCE” of the appellant/defendant?
JUDGMENT
- The Apex Court first noted that both the Trial Court and the High Court concluded that the trademark of the respondents/defendants was identical with that of the appellant/plaintiff and further that the services rendered by the respondents/defendants were under the same class, i.e., Class 16 and Class 42. Hence, the goods of the appellant/plaintiff will be covered by Section 29(2)(c) read with Section 29(3) of the Act.
- The Court further noted that subsection (2) of Section 29 of the said Act deals with those situations where the trademark is identical or similar and the goods covered by such a trademark are identical or similar, subsection (4) of Section 29 of the said Act deals with situations where though the trademark is identical, but the goods or services are not similar to those for which the trademark is registered. Moreover, is an undisputed fact that the appellant/plaintiff’s trademark “RENAISSANCE” was registered in relation to goods and services in Class 16 and Class 42 and the mark “SAI RENAISSANCE”, which is identical or similar to that of the appellant/plaintiff's trademark, was being used by the respondents/defendants in relation to the goods and services similar to that of the appellant/plaintiff, noted by the Court. Hence, it was not open for the High Court to have entered into the discussion as to whether the appellant/plaintiff's trademark had a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to the registered trademark.
- The Court relied on the judgment in the case of Ruston& Hornsby Limited v. Zamindara Engineering Co, to conclude that in an action for infringement, once it is found that the defendant’s trademark was identical with the plaintiff’s registered trademark, the Court could not have gone into an inquiry whether the infringement is such as is likely to deceive or cause confusion. In an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the trademark of the plaintiff.
- The Court further noted that the use of the word “SAI RENAISSANCE” was phonetically and visually similar to “RENAISSANCE”, and it would violate provisions of subsection (9) of Section 29 of the said Act.
- The Court also noted that Section 30(1) of the said Act reveals that for availing the benefit of Section 30 of the said Act, it is required that the twin conditions, i.e., the use of the impugned trade mark being in accordance with the honest practices in industrial or commercial matters, and that such use is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark, are required to be fulfilled and subsection (1) of Section 30 of the said Act, after clause (a), the word used is ‘and’, like the one used in subsection (4) of Section 29 of the said Act, in contradistinction to the word ‘or’ used in subsection (2) of Section 29 of the said Act, so the High Court erred by only referring to the condition stipulated in clause (b) of subsection (1) of Section 30 of the said Act ignoring the fact that to get the benefit of subsection (1) of Section 30 of the said Act, both the conditions had to be fulfilled. Hence, the High Court failed to take into consideration the principles of textual and contextual interpretation as explained in the case of Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and Others.
- Consequently, the Supreme Court concluded that respondents/defendants have violated the trademark “RENAISSANCE” of the appellant/plaintiff and therefore set aside the order of the High Court.
CONCLUSION
The Apex Court in the present case concluded that when the defendant's trademark is identical to plaintiff's registered trademark & their goods or services are identical, confusion in public shall be presumed. The same would be in blatant violation of section 29 of the Trade Mark Act, 1999.
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